Frankfurt Kurnit Klein & Selz

June 20th, 2017

Supreme Court Strikes Down Lanham Act Prohibition on Registration of Disparaging Trademarks

On June 19, 2017, the Supreme Court unanimously ruled in Matal v. Tam that Section 2(a) of the Lanham Act, which prohibits the federal registration of disparaging trademarks, is unconstitutional because it violates "a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend." The decision reverses the longstanding practice of the United States Patent and Trademark Office ("PTO") to refuse such registrations, and affirms the rights of owners of arguably disparaging marks, including the NFL's Washington Redskins. The decision is a win for free speech advocates, and it's important for advertising and marketing law practitioners everywhere. Here's what you need to know.

Background

Simon Tam, the lead singer of the rock band The Slants, appealed a decision of the PTO refusing registration to the band's trademark, THE SLANTS, because the mark was disparaging to Asians. The band, whose members are all of Asian descent, argued that they chose the trademark in order to "reclaim" its meaning and reject the stereotypes the term evokes. After the Federal Circuit ruled that the Lanham Act's prohibition was unconstitutional, the PTO appealed. The Supreme Court's decision to review the case also affected  the ongoing legal case of the Washington Redskins, whose trademark registrations for the team's name were cancelled in 2014 under the same Lanham Act provision.

The Decision

Justice Alito's decision rejected the PTO's argument that trademarks are government speech immune from First Amendment scrutiny, stating that "the Federal Government does not dream up the trademarks registered by the PTO," and, except as required by the provisions of the Lanham Act, does not express an opinion regarding the content of trademarks. Indeed, as long as a mark "meets the Lanham Act's [otherwise] viewpoint-neutral requirements, registration is mandatory." Thus, the Court unanimously held that trademarks, which "often have an expressive content," are private speech protected by the First Amendment whose eligibility for registration cannot be subject to viewpoint discrimination by the government. The Lanham Act's disparagement prohibition, which prohibited trademarks that were offensive, constituted exactly such viewpoint discrimination, rendering it unconstitutional. The Court also found arguments as to whether trademarks were commercial speech to be unpersuasive, as commercial speech also cannot be subject to viewpoint discrimination.

The Takeaway

Today's decision permits the registration of trademarks that may be considered offensive to groups or institutions, and marks a victory not just for The Slants and free speech advocates, but also for the Washington Redskins and other trademark owners whose marks have been refused or cancelled on the basis that they are disparaging.

If you have questions about the Tam case, or about trademark registration and other brand management matters, please contact Catherine Farrelly at (212) 826 5579 or cfarrelly@fkks.com or any other member of the Frankfurt Kurnit Trademark & Brand Management Group.